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Do I Really Need a Lawyer to Get a Trademark?

As an experienced Trademark Lawyer, I am frequently asked if individuals or small companies need an attorney to register for a federal trademark. The short answer is no — just as one doesn’t technically need a mechanic to change a car transmission or perform a major engine overhaul. Nonetheless, in both cases, hiring a professional is still advisable.

First, it is essential to conduct a thorough search of all available public records to determine if your proposed name and/or logo are confusingly similar to names or logos that are already being used in commerce by others.

The United States Patent and Trademark Office’s website allows one to search public records online for free. However, smart businesses hire a third party research firm to conduct this exhaustive research for them. If you attempt to do such a search yourself, you will probably miss something, and that could create significant problems for you down the line. Further, there are multiple sources of information about unregistered, but still relevant “common law” uses that must be considered.

This voluminous research will undoubtedly reveal third-party uses that are somewhat similar in some way, shape or form to your proposed use. For example, if you are interested in using the mark “COMPUTER” in connection with jeans, there will be other marks with “computer” in them. Are they confusingly similar? That is the key question, and like most nuanced issues in law, it is often a matter of degree and professional opinion.

Once you are comfortable with the knowledge that your proposed brand name and logo are clear of any major, conflicting third party uses, there are a number of questions to still ask: Is the mark “generic”, that is, the name of the class of goods for which you intend to use it?

For example, one cannot trademark the brand name “computer” for use in connection with computers. However, “computer” could theoretically become the brand name of a pair of jeans, because in that context, it is actually “arbitrary” or “fanciful.” Other categories of marks are “merely descriptive,” that is, does it merely describe an attribute of the product you are branding? Is the term “suggestive,” that is, does it not describe but suggest a feature of the goods? A legal professional can evaluate this issue based on how similar cases were handled on the past.

If you are still comfortable with the mark as proposed, you would then file a formal application in the United States Patent and Trademark Office. This application costs a fee of several hundred dollars all the way up to thousands of dollars, based on the number of “classes” of goods or services that you intend to use the trademark in connection with.

Eventually, you would receive a response from an Examiner working at the Trademark Office. That Examiner would probably ask a number of questions about your proposed mark, and often will seek further clarifications about your application. BE CAREFUL. Whatever you say in response to these questions will become public knowledge as part of the government file.

Further, whatever you do in response to these Office Actions can limit or affect your rights later. For example, disclaiming a portion of the mark, or narrowing the classes of goods for which you are seeking a trademark, can come back to haunt you later. It is easy to give away your rights, but much harder (and sometimes impossible) to ever get them back.

So, to answer the recurring question, one does not technically need an attorney to apply for a US Federal Trademark on a new brand name that one intends to use in commerce. However, it is a long and complicated process, especially if you are unfamiliar with it. And like replacing a car transmission, it requires skill and experience.